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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`
` Case No.: 21-CV-812 TWR (JLB)
`
`CLAIM CONSTRUCTION ORDER
`
`
`TACTION TECHNLOGY, INC.,
`Plaintiff,
`
`v.
`APPLE INC.,
`
`Defendant.
`
`
`In the present action, Plaintiff Taction Technology, Inc. (“Taction”) asserts a claim
`
`of patent infringement against Defendant Apple Inc. (“Apple”), alleging infringement of
`U.S. Patent No. 10,659,885 (“the ’885 Patent”) and U.S. Patent No. 10,820,117 (“the ’117
`Patent”) (collectively, “the patents-in-suit”). (ECF No. 1, Compl.) On December 3, 2021,
`the parties filed their joint claim construction hearing statement, chart, and worksheet
`pursuant to Patent Local Rule 4.2, identifying the disputed claim terms from the patents-
`in-suit. (ECF No. 58.) On January 21, 2022, the parties each filed their opening claim
`construction briefs. (ECF Nos. 72, 73.) On July 21, 2022, the parties each filed their
`responsive claim construction briefs. (ECF Nos. 110, 111.) On July 22, 2022, Apple filed
`an amended responsive claim construction brief. (ECF No. 112.) On September 13, 2022,
`the Court issued a tentative claim construction order. (ECF No. 122.) On September 21,
`2022, the parties filed supplemental claim construction briefing. (ECF Nos. 135, 136.)
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`The Court held a claim construction hearing on September 15, 2022. Thomas D.
`Pease, Jonathan S. Tse, and Landon A. Smith appeared for Plaintiff Taction. Christopher
`S. Marchese, Seth M. Sproul, and Ryan O’Connor appeared for Defendant Apple. After
`considering the parties’ briefing and the arguments present at the hearing, the Court issues
`the following claim construction order.
`BACKGROUND
`Taction is the assignee and owner of the ’885 Patent and the ’117 Patent. (ECF No.
`
`1, Compl. ¶¶ 68, 72.) See U.S. Patent No. 10,659,885, at [73] (issued May 19, 2020); U.S.
`Patent No. 10,820,117, at [73] (issued Oct. 27, 2020). In the present action, Taction alleges
`that Apple has directly infringed and induced or contributed to the infringement of the
`patents-in-suit by making, using, selling, and offering for sale Apple products, including
`the iPhone and Apple Watch, that implement haptics technology. (Compl. ¶¶ 77, 80.)
`Haptics refers to the science of enabling interaction with technology through the sense of
`touch, such as, for example, through the use of vibrations. (ECF No. 73 at 1.)
`
`The ’885 Patent is entitled “Systems and Methods for Generating Damped
`Electromagnetically Actuated Planar Motion for Audio-Frequency Vibrations” and was
`issued on May 19, 2020. ’885 Patent at [45], [54]. The ’117 Patent is entitled the same
`and was issued on October 27, 2020. ’117 Patent at [45], [54]. The ’885 Patent and the
`’117 Patent share a common specification, and both patents claim priority to provisional
`application No. 62/054,712 filed on September 24, 2014. ’885 Patent at [60]; ’117 Patent
`at [60].
`
`The invention described in the ’885 Patent and the ’117 Patent “relates to tactile
`transducers that produce bass frequency vibrations for perception by touch.” ’885 Patent
`at col. 1 ll. 20-21.1 The specification of the patents-in-suit explains:
`Below about 200 Hz, the lower the frequency of sound, the more it is
`perceived not only by vibration of the ear drum but also by touch receptors in
`
`
`1
`The ’885 Patent and the ’117 Patent share a common specification, so for ease of reference the
`Court will just cite to the ’885 Patent’s specification.
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`the skin. This sensation is familiar to anyone who has “felt the beat” of strong
`dance music in the chest, or through the seat of a chair, or has simply rested a
`hand on a piano. The natural stimulus is both auditory and tactile, and a true
`reproduction of it is possible only when mechanical vibration of the skin
`accompanies the acoustic waves transmitted through the air to the ear drum.
`
`Id. at col. 1 ll. 25-33.
`The specification then details the problems with the prior art audio-frequency tactile
`transducers, which utilized “axial shakers,” “un-damped eccentric rotating motors
`(‘ERMs’),” and “un-damped linear resonant actuators (‘LRAs’).” See id. at col. 1 ll. 34 to
`col. 2 ll. 46. With respect to the ERMs and LRAs, the specification explains that a lack
`mechanical damping is “problematic.” See id. at col 2 ll. 1-2 (“The problem of uneven
`frequency response is typically made worse by a lack of mechanical damping.”), col. 2 ll.
`11-13 (“Another approach in the prior art, also problematic, is the use of un-damped
`eccentric rotating motors (‘ERMs’) and un-damped linear resonant actuators (‘LRAs’).”).
`The patents-in-suit aim to overcome the problems of the prior art by disclosing “a
`thin, flat vibration module with a movable member that is electromagnetically actuated to
`produce motion in-plane.” Id. at col. 3 ll. 51-53; see also id. at col. 2 ll. 47-49. “[T]he
`module may consist of a mass and thin magnets, polarized through their thickness, where
`the mass and magnets are movably suspended inside a housing.” Id. at col. 3 ll. 63-66.
`Further, the suspension may include flexures or a ferrofluid layer. Id. at col. 3 ll. 66-67.
`In addition, “the vibration of the moving portion may be damped” using the layer of
`ferrofluid. Id. at col. 4 ll. 6-8.
`
`Independent claim 1 of the ’885 Patent recites:
`1. An apparatus for imparting motion to the skin of a user, the apparatus
`comprising:
`a housing;
`a plurality of coils capable of carrying electrical current;
`a plurality of magnets arranged in operative proximity to the plurality of coils;
`a moving portion comprising an inertial mass and the plurality of magnets;
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`a suspension comprising a plurality of flexures that guides the moving portion
`in a planar motion with respect to the housing and the plurality of conductive
`coils;
`wherein movement of the moving portion is damped by a ferrofluid in
`physical contact with at least the moving portion; and
`wherein the ferrofluid reduces at least a mechanical resonance within the
`frequency range of 40-200 Hz in response to electrical signals applied to the
`plurality of conductive coils.
`
`’885 Patent at col. 14 ll. 48-65.
`
`Independent claim 1 of the ’117 Patent recites:
`1. An apparatus comprising:
`a housing;
`a plurality of conductive coils capable of carrying electrical current;
`a plurality of magnets arranged in operative proximity to the plurality of
`conductive coils;
`a moving portion comprising an inertial mass and the plurality of magnets;
`a suspension comprising a plurality of flexures that guides the moving portion
`in a planar motion with respect to the housing and the plurality of conductive
`coils;
`wherein vibration of the apparatus imparts vibrations to a user’s skin;
`wherein vibration of the apparatus is damped by a viscous ferrofluid in
`physical contact with at least the moving portion;
`wherein the viscous ferrofluid reduces at least a resonance within a frequency
`range of 40-200 Hz in response to signals applied to the plurality of
`conductive coils;
`wherein said moving portion includes at least a pocket that provides space for
`at least a magnet;
`wherein each of said plurality of flexures is more resistant to motion
`transverse to a plane of the moving portion than it is to linear motion in the
`plane of the moving portion; and
`wherein said housing is generally cuboid in shape.
`
`’117 Patent at col. 14 ll. 47 to col. 15 ll. 5.
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`On April 26, 2021, Taction filed a complaint against Apple, alleging infringement
`
`of the patents-in-suit. (Compl.) On July 8, 2021, Apple filed an answer to the complaint
`and counterclaims against Taction. (ECF No. 17.) On August 10, 2021, the Court issued
`a scheduling order. (ECF No. 34.)
`
`On October 21, 2021, Apple filed before the Patent Trial and Appeal Board
`(“PTAB”) four petitions for inter partes review (“IPR”), challenging the validity of all of
`the asserted claims of the patents-in-suit. (ECF No. 53-1, Kete Decl. Exs. 1-4.) On January
`26, 2022, the Court stayed the action pending the PTAB’s decision on whether to institute
`the IPRs. (ECF No. 76 at 6.) On April 18, 2022, the PTAB issued decisions denying
`institution of IPR for all four IPR proceedings related to the patents-in-suit. (ECF No. 97.)
`On June 2, 2022, the Court lifted the stay of the of action, and the Court issued an
`amended scheduling order. (ECF Nos. 98, 99.) By the present claim constructions briefs,
`charts, and worksheets, the parties agree to the construction of one claim term, and the
`parties dispute the proper construction of six claim terms from the patents-in-suit.2 (ECF
`Nos. 58, 72, 73, 110, 111.)
`
`ANALYSIS
`Legal Standards for Claim Construction
`I.
`Claim construction is an issue of law for the court to decide. Teva Pharm. USA, Inc.
`
`v. Sandoz, Inc., 135 S. Ct. 831, 838 (2015); Markman v. Westview Instr., Inc., 517 U.S.
`370, 372 (1996). Although claim construction is ultimately a question of law, “subsidiary
`factfinding is sometimes necessary.” Teva, 135 S. Ct. at 838.
`
`“It is a ‘bedrock principle’ of patent law that the ‘claims of a patent define the
`invention to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp.,
`
`
`
`2
`In the parties’ joint claim construction chart and worksheet, the parties identified eight disputed
`claim terms. (ECF No. 58.) However, in Apple’s claim construction briefing, Apple states that it has
`withdrawn its contention that the term “plurality of flexures that are general flat and generally rectangular”
`is indefinite; and it has withdrawn its contention that the term “plurality of protrusions that HE within a
`same plane as adjacent portions of the plurality of flexures” is indefinite. (ECF No. 110 at 22.)
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`415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). “The purpose of claim construction is to
`‘determin[e] the meaning and scope of the patent claims asserted to be infringed.’” O2
`Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008).
`
`Claim terms “‘are generally given their ordinary and customary meaning[,]’” which
`“is the meaning that the term would have to a person of ordinary skill in the art in question
`at the time of the invention.” Phillips, 415 F.3d at 1312–13. “In some cases, the ordinary
`meaning of claim language as understood by a [PHOSITA] may be readily apparent even
`to lay judges, and claim construction in such cases involves little more than the application
`of the widely accepted meaning of commonly understood words.” Id. at 1314. “However,
`in many cases, the meaning of a claim term as understood by persons of skill in the art is
`not readily apparent.” O2 Micro, 521 F.3d at 1360. If the meaning of the term is not
`readily apparent, the court must look to “‘those sources available to the public that show
`what a person of skill in the art would have understood disputed claim language to mean.’”
`Phillips, 415 F.3d at 1314 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,
`Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)). “Those sources include ‘the words of the
`claims themselves, the remainder of the specification, the prosecution history, and extrinsic
`evidence.’” Id. (quoting Innova, 381 F.3d at 1116); see Ericsson, Inc. v. D-Link Sys., Inc.,
`773 F.3d 1201, 1217–18 (Fed. Cir. 2014).
`
`In determining the proper construction of a claim, a court should first look to the
`language of the claims. See Allergan Sales, LLC v. Sandoz, Inc., 935 F.3d 1370, 1373 (Fed.
`Cir. 2019) (“‘[C]laim construction must begin with the words of the claims themselves.’”);
`Source Vagabond Sys. Ltd. v. Hydrapak, Inc., 753 F.3d 1291, 1299 (Fed. Cir. 2014) (“[A]
`claim construction analysis must begin and remain centered on the claim language itself.”).
`The context in which a disputed term is used in the asserted claims may provide substantial
`guidance as to the meaning of the term. See Phillips, 415 F.3d at 1314.
`
`A court must also read claims “in view of the specification, of which they are a part.”
`Markman, 52 F.3d at 979; see 35 U.S.C. § 112(b) (“The specification shall conclude with
`one or more claims particularly pointing out and distinctly claiming the subject matter
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`which the inventor or a joint inventor regards as the invention.”). “Apart from the claim
`language itself, the specification is the single best guide to the meaning of a claim term.”
`Vederi, LLC v. Google, Inc., 744 F.3d 1376, 1382 (Fed. Cir. 2014). For example, “[a]
`claim construction that excludes a preferred embodiment is rarely, if ever correct and
`would require highly persuasive evidentiary support.” Kaufman v. Microsoft Corp., 34
`F.4th 1360, 1372 (Fed. Cir. 2022).
`
`But “[t]he written description part of the specification does not delimit the right to
`exclude. That is the function and purpose of claims.” Markman v. Westview Instruments,
`Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc); accord Arlington Indus., Inc. v.
`Bridgeport Fittings, Inc., 632 F.3d 1246, 1256 (Fed. Cir. 2011). Therefore, “it is improper
`to read limitations from a preferred embodiment described in the specification—even if it
`is the only embodiment—into the claims absent a clear indication in the intrinsic record
`that the patentee intended the claims to be so limited.” Dealertrack, Inc. v. Huber, 674
`F.3d 1315, 1327 (Fed. Cir. 2012); accord Openwave Sys., Inc. v. Apple Inc., 808 F.3d 509,
`514 (Fed. Cir. 2015).
`
`In addition to the claim language and the specification, the patent’s prosecution
`history may be considered if it is in evidence. Phillips, 415 F.3d at 1317. The prosecution
`history “consists of the complete record of the proceedings before the PTO and includes
`the prior art cited during the examination of the patent.” Id. “Like the specification, the
`prosecution history provides evidence of how the PTO and the inventor understood the
`patent.” Id. “Yet because the prosecution history represents an ongoing negotiation
`between the PTO and the applicant, rather than the final product of that negotiation, it often
`lacks the clarity of the specification and thus is less useful for claim construction purposes.”
`Id.
`In most situations, analysis of the intrinsic evidence will resolve claim construction
`
`disputes. See Vitronics, 90 F.3d at 1583; Teva, 135 S. Ct. at 841; see also Seabed
`Geosolutions (US) Inc. v. Magseis FF LLC, 8 F.4th 1285, 1287 (Fed. Cir. 2021) (“If the
`meaning of a claim term is clear from the intrinsic evidence, there is no reason to resort to
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`extrinsic evidence.”). However, “[w]here the intrinsic record is ambiguous, and when
`necessary,” district courts may “rely on extrinsic evidence, which ‘consists of all evidence
`external to the patent and prosecution history, including expert and inventor testimony,
`dictionaries, and learned treatises.’” Power Integrations, Inc. v. Fairchild Semiconductor
`Int’l, Inc., 711 F.3d 1348, 1360 (Fed. Cir. 2013) (quoting Phillips, 415 F.3d at 1317). A
`court must evaluate all extrinsic evidence in light of the intrinsic evidence. Phillips, 415
`F.3d at 1319. “‘[E]xtrinsic evidence is to be used for the court’s understanding of the
`patent, not for the purpose of varying or contradicting the terms of the claims.’” Genuine
`Enabling Tech. LLC v. Nintendo Co., 29 F.4th 1365, 1373 (Fed. Cir. 2022); see also Summit
`6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1290 (Fed. Cir. 2015) (“Extrinsic evidence
`may not be used ‘to contradict claim meaning that is unambiguous in light of the intrinsic
`evidence.’”). In cases where subsidiary facts contained in the extrinsic evidence “are in
`dispute, courts will need to make subsidiary factual findings about that extrinsic evidence.”
`Teva, 135 S. Ct. at 841.
`
`“[D]istrict courts are not (and should not be) required to construe every limitation
`present in a patent’s asserted claims.” O2 Micro, 521 F.3d at 1362; see also Eon Corp. IP
`Holdings v. Silver Spring Networks, 815 F.3d 1314, 1318–19 (Fed. Cir. 2016) (“‘[O]nly
`those terms need be construed that are in controversy, and only to the extent necessary to
`resolve the controversy.’”). In certain situations, it is appropriate for a court to determine
`that a claim term needs no construction and its plain and ordinary meaning applies. See
`id.; Phillips, 415 F.3d at 1314. But “[a] determination that a claim term ‘needs no
`construction’ or has the ‘plain and ordinary meaning’ may be inadequate when a term has
`more than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ meaning does
`not resolve the parties’ dispute.” O2 Micro, 521 F.3d at 1361. When the parties present a
`dispute regarding the scope of a claim term, it is the court’s duty to resolve the dispute. Id.
`at 1362; Eon, 815 F.3d at 1318.
`/ / /
`/ / /
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`II. Legal Standards Governing Indefiniteness
`
`“Definiteness is a statutory requirement for patentability.” Niazi Licensing Corp. v.
`St. Jude Med. S.C., Inc., 30 F.4th 1339, 1346 (Fed. Cir. 2022). Under 35 U.S.C. § 112(b),
`a patent must “conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as the invention.”
`“A claim fails to satisfy this statutory requirement and is thus invalid for
`indefiniteness if its language, when read in light of the specification and the prosecution
`history, ‘fail[s] to inform, with reasonable certainty, those skilled in the art about the scope
`of the invention.’” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1369–70 (Fed.
`Cir. 2014) (quoting Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014)).
`“This standard ‘mandates clarity, while recognizing
`that absolute precision
`is
`unattainable.’” Nevro Corp. v. Bos. Sci. Corp., 955 F.3d 35, 39 (Fed. Cir. 2020) (quoting
`Nautilus, 572 U.S. at 910); see also BASF Corp. v. Johnson Matthey Inc., 875 F.3d 1360,
`1365 (Fed. Cir. 2017) (“‘Reasonable certainty’ does not require ‘absolute or mathematical
`precision.’”).
`“General principles of claim construction apply to indefiniteness allegations.”
`HZNP Medicines LLC v. Actavis Lab’ys UT, Inc., 940 F.3d 680, 688 (Fed. Cir. 2019). The
`party asserting indefiniteness bears “the burden of proving indefiniteness by clear and
`convincing evidence.” BASF, 875 F.3d at 1365 (citing Biosig Instruments, Inc. v. Nautilus,
`Inc., 783 F.3d 1374, 1377 (Fed. Cir. 2015)); see also Microsoft Corp. v. i4i Ltd. P’ship,
`564 U.S. 91, 95 (2011) (holding that 35 U.S.C. § 282 “requires an invalidity defense to be
`proved by clear and convincing evidence”).
`III. Agreed Upon Claim Constructions
`
`In their joint claim construction statement and worksheet, the parties state that they
`agree that the claim term “plurality of conductive cons” should be construed as “plurality
`of conductive coils.” (ECF No. 58 at 3; ECF No. 58-2 at 24.) As a result, the Court
`construes the term “plurality of conductive cons” as “plurality of conductive coils.”
`/ / /
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`IV. Disputed Claim Terms
`A.
`“wherein the ferrofluid reduces at least a mechanical resonance within the
`frequency range of 40-200 Hz”
`
`
`Taction argues that the claim term “wherein the ferrofluid reduces at least a
`
`mechanical resonance within the frequency range of 40-200 Hz” should be given its plain
`and ordinary meaning and that no construction is required. (ECF No. 73 at 4.) Apple
`proposes that the term be construed as “wherein the ferrofluid produces a substantially
`uniform, non-peaked response over the frequency range of 40-200 Hz.” (ECF No. 72 at
`7.) Here, the parties dispute whether the claim term at issue requires that the claimed
`ferrofluid produces a substantially uniform, non-peaked response over the frequency range
`of 40-200 Hz.
`The Court begins its analysis of the parties’ dispute by reviewing the claim language.
`Independent claim 1 of the ’885 Patent recites “[a]n apparatus” comprising, among other
`things:
`a moving portion . . .
`. . .
`wherein movement of the moving portion is damped by a ferrofluid in
`physical contact with at least the moving portion; and
`wherein the ferrofluid reduces at least a mechanical resonance within the
`frequency range of 40-200 Hz in response to electrical signals applied to the
`plurality of conductive coils.
`’885 Patent at col. 14 ll. 54, 59-65. Here, the claim language merely requires that the
`claimed ferrofluid reduces “at least a mechanical resonance within the frequency range of
`40-200 Hz.” Id. at col. 14 ll. 62-63. The claim language makes no mention of requiring
`that the ferrofluid produces a substantially uniform, non-peaked response. As such, the
`claim language does not support Apple’s proposed construction.
`
`To support its proposed construction for this claim term, Apple relies on several
`passages in the specification and the prosecution history. (ECF No. 72 at 9-11; ECF No.
`112 at 2-3.) There are two situations when passages in the specification or the prosecution
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`history can limit the scope of the claims: “1) when a patentee sets out a definition and acts
`as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term
`either in the specification or during prosecution.” Thorner v. Sony Computer Ent. Am.
`LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012); accord Poly-Am., L.P. v. API Indus., Inc., 839
`F.3d 1131, 1136 (Fed. Cir. 2016). Apple argues that the specification and the prosecution
`history contain disavowals of claim scope. (ECF No. 72 at 9-12; ECF No. 112 at 2-3.)
`
`“Disavowal can be effectuated by language in the specification or the prosecution
`history.” Poly-Am., 839 F.3d at 1136. “In either case, the standard for disavowal is
`exacting, requiring clear and unequivocal evidence that the claimed invention includes or
`does not include a particular feature.” Id.; see also Genuine Enabling Tech., 29 F.4th at
`1374 (“For a statement during prosecution to qualify as a disavowal of claim scope, it must
`be ‘so clear as to show reasonable clarity and deliberateness,’ and ‘so unmistakable as to
`be unambiguous evidence of disclaimer.’”). Nevertheless, “[w]hile disavowal must be
`clear and unequivocal, it need not be explicit.” Poly-Am., 839 F.3d at 1136. “For example,
`an inventor may disavow claims lacking a particular feature when the specification
`describes ‘the present invention’ as having that feature.” Id. “Similarly, an inventor may
`disavow claims lacking a particular feature when the specification distinguishes or
`disparages prior art based on the absence of that feature.” Id.
`
`To support its disavowal argument, Apple cites to the following passage in the
`specification describing the prior art:
`
`Another approach in the prior art, also problematic, is the use of . . . un-
`damped linear resonant actuators (“LRAs”). . . .
`
`The main drawback of LRAs is the dependence on the “resonance,” that
`the name suggests. The devices are designed for tactile alerts, not fidelity,
`and so they resonate at a single frequency and produce perceptible vibration
`at only that frequency. For example a typical LRA might produce up to 1.5 g
`of acceleration at 175±10 Hz, but less than 0.05 g outside this 20 Hz range.
`Such a high Q-factor renders this sort of device useless for high fidelity
`reproduction of low frequency tactile effects in the 15-120 Hz range.
`
`/ / /
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`’885 Patent at col. 2 ll. 11-13, 25-36.3 Here, the specification disparages un-damped linear
`resonant actuators (“LRAs”), referring to them as “problematic.” This language in the
`specification supports the notion that un-damped LRAs are outside of the scope of the
`invention claimed in the patents-in-suit.
`That un-damped LRAs are outside the scope of the invention claimed in the patents-
`in-suit is further supported by statements made by the patentee during the prosecution of
`the parent application. “‘[P]rosecution disclaimer may arise from disavowals made during
`the prosecution of ancestor patent applications.’” Ormco Corp. v. Align Tech., Inc., 498
`F.3d 1307, 1314 (Fed. Cir. 2007) (quoting Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d
`1314, 1333 (Fed. Cir. 2003)). “When the application of prosecution disclaimer involves
`statements from prosecution of a familial patent relating to the same subject matter as the
`claim language at issue in the patent being construed, those statements in the familial
`application are relevant in construing the claims at issue.” Id.; see E.I. du Pont De Nemours
`& Co. v. Unifrax I LLC, 921 F.3d 1060, 1070 (Fed. Cir. 2019) (“When a parent application
`includes statements involving ‘common subject matter’ with the terms at issue, those
`statements are relevant to construction of the terms in the child patent.”).
`During prosecution of the parent application, the Examiner rejected one of the claims
`as anticipated by the prior art reference Morris. (ECF No. 72-5, Ex. D at 64.) In an effort
`
`
`
`3
`At the claim construction hearing, Apple argued that other portions of the specification contained
`disavowals of claim scope. The Court declines to address these additional disavowal arguments as they
`were not included in Apple’s claim construction briefing. See SmithKline Beecham Corp. v. Apotex Corp.,
`439 F.3d 1312, 1319 (Fed. Cir. 2006) (“[A]rguments not raised in the opening brief are waived.”); see,
`e.g., Quanergy Sys., Inc. v. Velodyne Lidar USA, Inc., 24 F.4th 1406, 1415 (Fed. Cir. 2022). For example,
`at the hearing, Apple cited to the following passage in the specification:
`
`
`Another drawback of this approach was that no provision was made for critically damping
`those transducers. Accordingly, the tactile acceleration frequency response was
`underdamped, with a claimed Q-factor of 1.5 to 3.
`
`
`’885 Patent at col. 2 ll. 63-67. This passage in the specification is never cited in either Apple’s opening
`claim construction brief or Apple’s responsive claim construction brief. (See generally ECF No. 72 at 7-
`13; ECF No. 112 at 1-5.)
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`to overcome this rejection, the patentee noted that Morris “discloses a multi-axis array of
`linear resonant actuators, each of which, by definition is highly resonant.” (Id.) The
`patentee then argued:
`Applicant’s invention, in contrast, is directed to transducers with highly
`damped output.
`“Motion of the movable member can be damped so that the
`steady-state sinusoidal voltages applied to the module at different
`frequencies produce an acceleration response of the movable member
`that is substantially uniform over the range of 40-200 Hz.” Column 3,
`lines 56-61.
`Furthermore, Applicant’s invention specifically teaches way from
`linear resonant actuators:
`“Another approach in the prior art, also problematic, is the use of
`un-damped eccentric rotating motors (“ERMs”) and un-damped linear
`resonant actuators (‘LRAs’).” Col. 2, lines 14-16.
`(Id. at 65.) These statements in the prosecution history when combined with the above
`statements in the specification represent a clear and unequivocal disavowal that: (1) the
`claimed invention is directed to “transducers with highly damped output;” and (2) the
`claimed invention does not utilize or encompass “un-damped linear resonant actuators.”4
`
`
`4
`Taction argues that these statements cannot constitute prosecution history disclaimers as the claim
`language in the parent application and the claim language in the term at issue here are different. (ECF
`No. 111 at 4.) The Court acknowledges that the claim at issue in the parent application uses slightly
`different language from the claim at issue here. Compare ’885 Patent at col. 14 ll. 62-65 with ECF No.
`72-5, Ex. D at 76 (amended claim 15). The Court further acknowledges that the Federal Circuit has
`explained: “When the purported disclaimers are directed to specific claim terms that have been omitted or
`materially altered in subsequent applications (rather than to the invention itself), those disclaimers do not
`apply.” Saunders Grp., Inc. v. Comfortrac, Inc., 492 F.3d 1326, 1333 (Fed. Cir. 2007); accord Stryker
`Corp. v. Zimmer, Inc., 837 F.3d 1268, 1274 (Fed. Cir. 2016); see also Regents of Univ. of Minnesota v.
`AGA Med. Corp., 717 F.3d 929, 943 (Fed. Cir. 2013) (“In general, a prosecution disclaimer will only
`apply to a subsequent patent if that patent contains the same claim limitation as its predecessor.”). But
`that principle does not apply here because the disclaimers at issue are directed to “the invention itself” and
`not to any specific claim term. In the statements at issue the patentee refers to “Applicant’s invention.”
`(ECF No. 72-5, Ex. D at 65.) Thus, the patentee is describing the claimed invention as a whole and not
`any specific claim term.
`
`Taction argues that in the statements at issue the patentee was not describing the claimed invention
`
`as a whole. Taction contends the statements were limited to the claim at issue, amended claim 15 in the
`
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`See Poly-Am., 839 F.3d at 1136 (“[A]n inventor may disavow claims lacking a particular
`feature when the specification distinguishes or disparages prior art based on the absence of
`that feature.”); MBO Lab’ys, Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1330 (Fed.
`Cir. 2007) (“Prosecution arguments like this one which draw distinctions between the
`patented invention and the prior art are useful for determining whether the patentee
`intended to surrender territory, since they indicate in the inventor’s own words what the
`invention is not.”).
`Nevertheless, disclaimer